Search in the Right Places
When you’re looking for something, it seems obvious to say that you need to look in all the right places. The same is true of trademark searches, where (whether you’re searching for yourself, or are paying someone else to search for you) you need to make sure that all of the correct databases are being searched. You should never be afraid to ask questions about the extent of paid searches, and this article gives you an idea of what questions to ask.
The key point: make sure your trademark search covers all the right databases, otherwise you’re just wasting your money.
Trademark registers
In an earlier article, we explained the difference between searches of ‘trademark registers’ and ‘market searches’. Here, we’ll look at the the register-based and market-based databases that are covered in Epiphany Law's ‘Infringement Search’, and we’ll explain why they’re included.
1. ATMOSS search
ATMOSS stands for the ‘Australian Trade Mark Online Search System’. It’s the online database of all applications and registrations kept by IP Australia, and includes pending and refused applications as well as registered and removed trademarks.
This is the most important database for any trademark search. If you find registered trademarks that are ‘deceptively similar or substantially identical’ to yours, then you’ll need to come up with a good strategy for your trademark application, or you’ll have to re-think your entire branding strategy.
2. Madrid Express
An ATMOSS search doesn’t give you the whole picture when it comes to Australian trademark applications. Australia is a signatory to the ‘Madrid Protocol’, which is an international trademark scheme. This scheme allows (for example) an applicant in a country such as the United States to file a local application there and then extend it to Australia up to six months later (while keeping the original filing date).
Records of all Madrid Protocol Applications are kept on the ‘Madrid Express’ database. It’s important to check this database for any relevant trademarks that designate Australia, but haven’t appeared in the ATMOSS database yet.
Market databases
1. The ASIC Registers
The Australian Securities and Investments Commission (ASIC) maintains a comprehensive database of all registered, reserved and de-registered company and business names, as well as names of schemes and trusts. The names in the ASIC database don’t necessarily have any trademark rights attached to them, but it is a good way to find other traders with similar names to your trademark.
2. The Australian Business Register
The Australian Business Register (‘ABR’) also has a database of all entities that have an Australian Business Number. The register is not that old (it was established to aid with the administration of the GST, which came into effect in 2000), but it is very comprehensive. As there are quite a number of disadvantages to trading in Australia without having an ABN, nearly everyone who has been in business since 2000 will appear on this database.
3. Telephone directories
It’s not unheard of for some businesses to use trading names in advertising materials that aren’t officially registered anywhere. A search of the Yellow Pages® and White Pages® telephone directories (Australia-wide) can often uncover these traders.
4. Domain name registries
Domain names aren’t the same as trademarks or business names, but people often use their domain names as unregistered trademarks. Searching the domain name registers for the ‘.com.au’ and ‘.com’ top level domains is another good way to identify potential conflicting marks.
5. The World Wide Web
Finally, the web has quickly become the largest information repository on the planet, and it is also a rich source of information about trademarks. Online ads, articles, press releases, even web sites belonging to traders with similar names can be uncovered using search engines. At Epiphany Law we perform a search of using Google®, a search engine that has become dominant because of its excellent search results.